Ex parte PTAB Guiding Patent Prosecution

How often do the largest patent firms appeal?

We recently reported on eight reasons to consider filing an appeal during the course of patent prosecution. Based on the current relatively low number of appeals across all applications, we suggested that some law firms may be underutilizing the appeal procedure in their practices. Now, we report the differences among the three most active patent firms. Our methods are explained in more detail at the end.

The top firms are 1) Finnegan, Henderson, Farabow, Garrett & Dunner LLP ; 2) Fish & Richardson PC; and 3) Knobbe Martens, which came from a recently published blog post on PatentlyO on the biggest firms according to total registered patent attorneys/agents. The Patentlyo blog post put Finnegan in the lead, with Fish second, and Knobbe close behind. This doesn’t mean that these firms have the most amount of patent prosecution work, but it at least puts us in the ballpark. We report here that these three firms have far different numbers of ex parte PTAB appeals.

From July 25, 2016 to February 22, 2018, Fish & Richardson had 143 appeals. Finnegan was second with 78 appeals. And Knobbe was third with 60 appeals. While Fish and Knobbe had roughly the same number of patent applications (60,916 and 58,170, respectively) across all customer numbers searched, Fish had more than double the appeals. Even Finnegan, which totaled a third fewer applications (41,194) than Knobbe, had more appeals than Knobbe.

The disparate number of appeals across these firms stems from a confluence of factors. One factor relates to the law firm itself. That is, a law firm may over- or under-sell the benefits of an appeal.

Some practitioners get comfortable at preparing Amendment office action responses because it is the most common. Knowingly or not, psychological biases could influence the response strategy that a practitioner chooses or recommends to pursue. A practitioner whose recent sucessful strategy in one case might let this success influence strategy in an unrelated case simply because the strategy is more recent. Plus, projects that have fixed or capped fees favor efficiency and practitioners may opt for work that they are efficient at doing. These biases can be reinforced by billable hour incentives because prosecution can always be continued with an RCE.

Finally, to law firms’ defense, before now there hasn’t been a way to quantify the chances of succeeding on the merits of an appeal. A wealth of experience can put someone in the general vicinity, but even then is incomplete.

So part of the reason why firm appeal rates differ is law firm-specific.

Another factor for law firms pursuing appeals at much different levels relates to the client. Some clients simply care less about the quality of patents. To them, numbers are more important. So despite the appeal procedure having several advantages for getting a good patent, it may not be necessary for some clients’ goals. An allowed application, even with narrow unusable claims, may be good enough.

That clients drive appeals is perhaps best shown in the unequal distribution of appeals across customer numbers within a given firm. Pockets of appeals may show up disproportionately high for one customer number and low for others, suggesting that the decision to file an appeal largely depends on the client. Some clients may not like the concept of appealing. And as every lawyer knows, even excellent advice can only go so far, after which the client makes the call.

Further still, different firms have different clientele, and some clients have more patentable subject matter than others. Often times, appeals are pursued only after options with examiners have been exhausted. So if firms operate under this paradigm (which is not being suggested that these three firms do), the clients with the less patentable subject matter might appeal more. But part of advocating includes not only accepting the client’s money, but providing realistic feedback on patentability.

Another reason a client may shy away from an appeal may stem from a lack of trust with the practitioner. The upfront cost of appealing is not small change. And the client may interpret a strategy suggestion to appeal as a way to extract more money from the client, even with the best of intentions. Up until now, there has not been a good way to objectively convey the chances of succeeding on appeal and advancing prosection.

But now, with Anticipat Practitioner Analytics, you can print out an unlimited number of professional reports that show how often the board overturns specific grounds of rejection relevant to a specific examiner. These include the specific points, called tags, and the legal authority, that the Board relied on in overturning similar rejections.

For example, take a Section 101 rejection asserting abstract idea. You believe the examiner is wrong on step 1. By looking at Anticipat, you can see where the Board has overturned abstract idea rejections based on step 1 for this examiner, art unit, or tech center. With this knowledge, you can feel more confident in advising appeal. So a data driven approach can greatly improve the advice and build trust on the strategy.

We looked up customer numbers for the three firms using a publicly available dataset. We then analyzed customer numbers associated with the three firms, of which there were a lot. Finnegan has at least 55 customer numbers totaling 41,194 applications. Fish has at least over 100, totaling 60,916 applications. And Knobbe has at least 50 customer numbers, totaling 58,170. We then plugged in the customer numbers into Anticipat’s Research page and tallied up the total for the relevant window of time.